JUDGMENT
Ramamoorthy, J.
1. The plaintiff filed a suit for injunction against the defendant on the ground of passing off the trade mark SEFLOX used by the plaintiff for manufacturing its pharmaceutical preparations, now used by the defendant and selling products in the same name SEFLOX.
2. In para 5 of the plaint the plaintiff has started that it has filed an application for registration under Applicant No. 589743 in relation to medicinal and pharmaceutical products falling in class 5 of the Fourth Schedule of the Trader and Merchandise Marks Act, 1958. The application was published in the Trade Mark Journal on the 1st February, 1993. In para 7 the plaintiff has stated thus :
That the plaintiff’s trade mark SEFLOX has already become distinctive and associated with the aforesaid goods on account of its long, continuous, extensive and exclusive user thereof. The public at large associates the said trade mark to the aforementioned goods of the plaintiff and the plaintiff has been using the said trade mark exclusively and to the exclusive of others. On account of its extensive use, the said products of the plaintiff have acquired a vast reputation as a high quality product originating exclusively from the plaintiff. The plaintiff’s goods and his business are dependent on the trade mark SEFLOX. The plaintiff has built up a valuable trade under the said trade mark as is evident from the year wise sales mentioned as per Annexure ‘C’.
Annexure C is as under :
SALES RECORD FOR SEFLOXRANGE
S. No. Product Packing April 1993 – April 1994 –
March 1994 – March 1995
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(UNIT) (VALUE) (UNIT) (VALUE)
(CRS.) (CRS.)
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1. SEFLOX INF (100 ML) 24709 0.054 173796 0.268
2. SEFLOX 250 (1 x 4) 233426 0.447 55365 0.077
3. SEFLOX 500 (1 x 4) 272671 0.941 83297 0.215
4. SEFLOX 250 (1 x 10) 20182 0.093 144714 0.045
5. SEFLOX 500 (1 x 10) 13115 0.083 163417 0.097
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3. In para 10 the plaintiff has stated that the defendant has adopted the trade mark SEFLOX and had started manufacturing and marketing pharmaceutical products in or about first week of August 1995. The plaintiff received a notice from the defendant and the plaintiff replied by its registered letter dated 10th August, 1995 through its counsel. It is the case of the plaintiff, that both the plaintiff and the defendant are operating the same line of business and the same markets and, therefore, there is likelihood of confusion, and if the defendant is permitted to do his business using the trade mark of the plaintiff the plaintiff will be put to great hardship and loss.
4. The defendant filed the written statement stating that the defendant coined the trade mark SEFLOX and adopted the same in 1991 and has been selling its products from August 1992. The application filed by the plaintiff for registration would show that the plaintiff could not have used the trade mark SEFLOX prior to February 1993. It was the defendant who issued notice to the plaintiff in the first week of August 1995 and the plaintiff after having issued the reply filed the suit. The defendant denies the user of the trade mark by the plaintiff since April, 1990. The defendant has built up this reputation from 1992 and the plaintiff has deliberately adopted the identical trade mark just to enrich itself on the goodwill of the defendant.
5. The defendant has made a counter claim against the plaintiff seeking the following reliefs.
“21. It is, therefore, respectfully, prayed that this Hon’ble Court may be pleased to grant the following reliefs in favour of the defendant and against the plaintiff :
(i) a decree for permanent injunction restraining the plaintiff its directors, assigns in business, servants, agents and dealers from manufacturing, selling offering for sale, advertising directly or indirectly dealing in pharmaceutical preparations under the trade mark SEFLOX or any other marks as may be deceptively similar to and from using any other mark, logo or device that may lead to confusion or deception amounting to passing off of the plaintiff’s goods/business for those of the defendant;
(ii) a decree for delivery up of the infringing goods including tablets, capsules, packaging, cartons, dies, blocks or any other article bearing the trade mark SEFLOX by the plaintiff to an authorized representative of the defendant for destruction/erasure;
(iii) an order for rendition of account of profits illegally earned by the plaintiff by unauthorized sale of pharmaceutical preparations under the trade mark SEFLOX and a decree for the amount so found due may be passed in favour of the defendant.
6. The plaintiff filed written statement to the counter claim of the defendant. The plaintiff on 25.9.1995, filed the following documents :
(1) Copy of resolution.
(2) Strips of the plaintiff under the Trade Mark “SEFLOX” as Annexures A & B.
(3) Sale figures of the plaintiff as Annexure C.
(4) Different labels of the plaintiff under the Trade Mark “SEFLOX”.
(5) Photostat copy of Application No. 589743 the plaintiff along with photocopy, application Form TM-16.
(6) Photostat copy of legal notice of the defendant.
(7) Photostat copy of reply of the plaintiff to the legal notice.
(8) Photostat Copy of letter dated 4.4.1990 and 15.4.1993 issued by the ACME Company.
(9) Photostat Copy of bill dated 30.12.1992 and 24.12.1992 of Herjender Singh.
(10) Photocopies of Invoice of the plaintiff for the plaintiff for the year 1993, 1994 and 1995.
7. The defendant on 11.12.1995 filed the following documents :
(1) Photocopy of the Renewed Drug License of the defendant issued by the Drug Controller, Hyderabad dated 1.9.1994.
(2) Photocopy of first Batch Sheet pertaining to SEFLOX of the defendant dated 18.8.1992.
(3) Photocopy of the trade mark application No. 563781 for Registration of trade mark SEFLOX by the defendant dated 13.12.1991.
(4) Photocopy of sale invoices of SEFLOX tablets of the defendant from the period 1992-1995.
(5) Photocopy of bills pertaining to artwork charges of SEFLOX cartons of the defendants.
(6) The annual sales figures of SEFLOX tablets of the defendants for the years 1992-1995.
(7) Photocopy of Visual Aids Pertaining to SEFLOX of the defendant.
8. Mr. Bansal, learned counsel for the plaintiff submitted that the word was invented by the plaintiff and that will be evident from a letter dated 4th of the April, 1990 from ACME Company patent and trade mark attorney to the plaintiff wherein the trade mark SEFLOX is mentioned. Therefore, the fact that the plaintiff had invented the word cannot be disputed by the defendant is the argument by the learned counsel. Mr. Hemant Singh learned counsel for the defendant submitted that in the application filed by the plaintiff for registration before the Registrar of Trade Mark against column USER, 1st February, 1993, it is mentioned by the plaintiff in the following terms :
“USER – Proposed to be used”.
Therefore, according to the learned counsel that till February 1993, the plaintiff had not used the trade mark while the defendant had started manufacturing products much earlier to 1992. Therefore, it is established beyond doubt that the defendant is the prior user, is the submission of Mr. Hemant Singh, learned counsel for the defendant.
9. The learned counsel for the plaintiff Mr. Bansal, submitted that the plaintiff has been using the trade mark right from 1990 and the plaintiff has been having business all over India while the defendant is doing the business only in Hyderabad, Andhra Pradesh and, therefore, if the defendant is allowed to interfere with the business of the plaintiff, the plaintiff will be put to irreparable loss and hardship. On the other hand, the defendant, who has confined, itself only to a particular State will not be put to any hardship. Mr. Bansal, learned counsel for the plaintiff relied upon the following cases :
Mc Carthy on trade marks Vol. 1 Ed. Surjit Singh v. M/s. Almbic Glass Industries Ltd. , M/s. Anglo Dutch Paint, Colour and Varnish Works Pvt. Ltd. v. M/s. India Trading House , M/s. Hindustan Pencils Pvt. Ltd. v. M/s. India Stationery Products Co. and another , American Home Products Corporation v. Mac Laboratories Pvt. Ltd. and another , Chhattar Extractions Ltd. and another v. Kochar Oil Mills Ltd. (1995 PTC (15) DB). Goramal Hart Ram v. Bharat Soap and Oil Industries (1985 Arb. LR 49 (Delhi) DB), Priya Rubber and Plastic Industries and others v. Bajrangbali Industries and others (1995 PTC 109 (All) DB), and Williams Company v. H. Bronnlry & Co. Ltd. (1909 RPC 109-765).
10. Mr. Hemant Singh learned Counsel for the defendant contended that the plaintiff has not produced the drug license which will conclusively show on and from which date the plaintiff has started manufacturing drug and the plaintiff has withheld the material document from this court and, therefore, on the material placed before this court the prior user by the defendant is proved.
11. I have perused the documents filed by the plaintiff and also by the defendant. The argument advanced by Mr. Bansal about how the defendant came to use the name is that the patent trade mark attorney. ACME Company, New Delhi, is a well-known Company and the defendant must have somehow managed to get the name and had started using it recently.
12. It is now seen from the documents that the plaintiff has been having extensive business while the defendant’s business is only, confined to a region. This is not a case where the defendant had come to the business long time ago and the plaintiff is seeking to interdict. The defendant cannot rely upon its user to non-suit the plaintiff. The question of user and its efficacy is dependent upon the user of the product for a considerable length of time. In this case it can be inferred, for a prima facie consideration of the case that the plaintiff has invented the word and the representation made by the plaintiff before the Registrar in 1993 that it was proposing to use the trade mark cannot be put against the plaintiff. The fact that just at the time of institution of the case, the plaintiff had informed the Registrar that there was mistake committed by the plaintiff in the earlier representation made by it cannot also be put against the plaintiff at this stage. Having regarding to the fact that both the plaintiff and the defendant had started manufacturing the products only recently, the question relevant is who has invented the word and that is the principal point to be taken into accounts in considering the grant of injunction pending the suit.
13. In trade mark cases there is no rule of thumb which could be applied to the facts of all cases coming before the court. The ingenuity of traders will always be able to find out some means to enter on the trade of another and the courts have to be very vigilant in keeping in mind the principles laid down by the Supreme Court and this Court in a number of cases. It is not necessary to discuss all the earlier cases, in all subsequent matters and that will become very pedantic and redundant. Therefore, in my view the plaintiff is entitled to have injunction on the facts and circumstances of this case.
14. Accordingly, there shall be an injunction restraining the defendant their servants, agents, representatives, dealers and all others acting for and on behalf of the defendant from manufacturing, selling, offering for sale, advertising or displaying directly or indirectly, dealing in pharmaceutical formulations under the trade mark SEFLOX or any other trade mark identical with or deceptively similar to the plaintiff trade mark SEFLOX till the disposal of the suit.
Therefore, IA No. 9918/95 under Order XXXIX Rules 1 and 2 filed by the plaintiff is allowed. IA No. 12451/95 under Order XXXIX Rules 1 and 2 filed by the defendant for grant of injunction is dismissed. IA No. 12447/95 under Order XXXIX Rule 4 is dismissed. Post the matter for further proceedings on 10th of October, 1996.